Summertime reading: Servier decision

Key points

• Today a decision of the EU Commission (AT.39612) in the Servier case, as published online 30.09.2016.
• “On 24 November 2008, the Commission started its ex-officio investigation with unannounced inspections of the premises of Servier, Krka, {} and Teva in various Member States.”
• “From the end of the 1990s and in the early 2000s, Servier progressively devised a strategy aimed at preventing or at least delaying generic entry after expiry of the perindopril compound patent. The strategy consisted of a variety of measures that were constantly adapted to take into account market developments.”
• “All of these practices are described in the subsequent subsections in the following order: (1) filing a patent cluster  [...] The description of these practices is without prejudice to their legality under Union competition law.”
• “In this context, contemporaneous evidence reveals that, of the 33 process patents (mostly patents for synthesis routes), 21 {patents} were described by Servier internally as "*blocking" patents or "*paper patent". Three of these 21 process patents were in addition characterised as involving "*zero inventive step". As shown in Table 4, these patents were, however, granted by the EPO.”
• “Furthermore, minutes of one of Servier's internal meetings {}, show that Servier continued throughout the lifecycle of perindopril to develop and file patent applications which were themselves considered internally as "*blocking" patents.
  The minutes categorise as such 31 synthesis process patent applications. For those patent applications Servier proposes filing with the EPO as a purely editorial task – i.e. without conducting any patentability studies or any laboratory trials: "*Purpose of the meeting: […] to establish a list of ‘reasonable’ synthesis processes of perindopril or of its synthesis intermediates, which will be the subject of ‘blocking’ patent applications. […] The 31 corresponding patent applications, which will be subjected neither to patentability studies nor to laboratory tests, will have to be drafted and filed as soon as possible (as early as February 2003 for the first), the aim being to obtain the publication of a first ‘wave’ of these applications in June 2003".”
• An appeal was filed with the General Court. In the decision of 12.12.2018, the Court reduced the fine imposed on Servier (and Biogaran) from EUR 330  million to EUR 228 million. Of note, this fine was imposed in view of certain agreements with generic companies  (as I understand it), not in view of the filing strategy mentioned above.
• The General Court decision includes the statement that: “It should also be noted that, in the present case, in the contested decision, although the Commission referred, in recitals 113 to 123, to the applicants’ strategy of creating a ‘patent cluster’ and ‘paper patents’, it did not, however, rule on the validity of the disputed patents at the time the agreements were concluded.”
• Still from the Commission decision: “During the inspections in 2008, a number of documents were identified for which Servier claimed inter alia that they were protected by Legal Professional Privilege (hereinafter "LPP"). Servier's claims for LPP were all subsequently resolved. On 10 June 2010, the Commission returned unopened two sealed envelopes to Servier, opened four sealed envelopes and added the latter content to the case file with Servier's consent.”
• For all quotes: footnotes omitted; underlining added; insertions and edits marked with {} are made by me.

Commission Decision AT.39612 09.07.2014
https://ec.europa.eu/competition/elojade/isef/case_details.cfm?proc_code=1_39612
https://ec.europa.eu/competition/antitrust/cases/dec_docs/39612/39612_12422_3.pdf

Appeal press release
https://curia.europa.eu/jcms/upload/docs/application/pdf/2018-12/cp180194en.pdf
Appeal decision ECLI:EU:T:2018:922. French only. See in particular para. 243.

http://curia.europa.eu/juris/liste.jsf?num=T-691/14&language=EN

English: https://curia.europa.eu/juris/document/document.jsf?docid=208901&mode=req&pageIndex=1&dir=&occ=first&part=1&text=&doclang=EN&cid=1579990

Further Appeal before the Court of Justice was filed, see link above.

EU General Court 2010 - Astrazeneca decision

• The EU General Court: “Article 82 EC prohibits a dominant undertaking from eliminating a competitor and thereby strengthening its position by using methods other than those which come within the scope of competition on the merits”
• A key conclusion: “the Commission applied Article 82 EC correctly in taking the view that the submission to the patent offices of objectively misleading representations by an undertaking in a dominant position which are of such a nature as to lead those offices to grant it SPCs to which it is not entitled or to which it is entitled for a shorter period, thus resulting in a restriction or elimination of competition, constituted an abuse of that position. ”
• The Courts initial reasoning: “the Court observes that the submission to the public authorities of misleading information liable to lead them into error and therefore to make possible the grant of an exclusive right {a supplementary protection certificate, in this case},  to which an undertaking is not entitled, or to which it is entitled for a shorter period, constitutes a practice falling outside the scope of competition on the merits which may be particularly restrictive of competition”
• On the general principle: “in so far as an undertaking in a dominant position is granted an unlawful exclusive right as a result of an error by it in a communication with public authorities, its special responsibility not to impair, by methods falling outside the scope of competition on the merits, genuine undistorted competition in the common market requires it, at the very least, to inform the public authorities of this so as enable them to rectify those irregularities”
• “The Court rejects the applicants’ argument that a finding of an abuse of a dominant position requires that an exclusive right obtained as a result of misleading representations has been enforced. When granted by a public authority, an intellectual property right is normally assumed to be valid and an undertaking’s ownership of that right is assumed to be lawful. The mere possession by an undertaking of an exclusive right normally results in keeping competitors away, since public regulations require them to respect that exclusive right. Furthermore, to the extent that the applicants argue that an intellectual property right must have been exercised in legal proceedings, that argument would tend to make the application of Article 82 EC conditional on the contravention by competitors of the public regulations by their infringing the exclusive right of an undertaking; that argument must be rejected.”
• The CJEU dismissed the appeal. The fine set by the General Court was about EUR 50 million. This fine was for the finding that the parties “have infringed Article 82 of the Treaty and Article 54 of the EEA Agreement by the pattern of misleading representations before patent offices in Belgium, Denmark, Germany, the Netherlands, Norway and the United Kingdom and before national courts in Germany and Norway”. 
• Edits with {...} are made by me.

Addendum 05.10.2021

Para 493 of T-321/05: “The Court therefore finds that, in view of the context in which those representations to the patent attorneys and patent offices were made, AZ could not reasonably be unaware that, in the absence of an express disclosure of the interpretation that it intended to adopt of Regulation No 1768/92 which underlay the choice of the dates provided in relation to France and Luxembourg, the patent offices would be prompted to construe those representations as indicating that the first technical marketing authorisation in the Community had been issued in Luxembourg in ‘March 1988’. Thus, there was no need for the Commission to demonstrate AZ’s bad faith or positively fraudulent intent on its part, it being sufficient to note that such conduct, characterised by a manifest lack of transparency, is contrary to the special responsibility of an undertaking in a dominant position not to impair by its conduct genuine undistorted competition in the common market (see, to that effect, Nederlandsche Banden-Industrie-Michelin v Commission, paragraph 30 above, paragraph 57).”Para. 494: “Accordingly, the dispute between the parties on the issue whether the misleading nature of the SPC applications stemmed from AZ’s bad faith is irrelevant. In any event, the applicants’ multiple arguments based on the alleged absence of bad faith on the part of AZ, as regards both the interpretation that it chose to adopt of Regulation No 1768/92 and the manner in which the SPC applications were presented, or the significance that it attached to the Luxembourg list, cannot constitute objective justification for the absence of proactive disclosure of the nature of the dates mentioned in relation to the Luxembourg and French marketing authorisations, on the one hand, and of the interpretation of Regulation No 1768/92 which led to the choice of those dates, on the other.”

See also this post, of a relevant law firm: “It was held to be sufficient that the conduct of AstraZeneca [towards the patent offices] was characterised by a "lack of transparency" or absence of "proactive disclosure" and was thereby contrary to the "special responsibility" of an undertaking in a dominant position "not to impair by its conduct genuine undistorted competition in the market".”

 https://www.brickcourt.co.uk/news/detail/case-t-321-05-astrazeneca-v-commission-ground-breaking-abuse-of-dominance-judgment : 

Case T‑321/05 AstraZeneca v. Commission [2010] ECLI:EU:T:2010:266 https://e-justice.europa.eu/ecli/ECLI:EU:T:2010:266
Case C-457/10 P AstraZeneca v. Commission [2012] ECLI:EU:C:2012:770 https://e-justice.europa.eu/ecli/ECLI:EU:C:2012:770
https://ec.europa.eu/competition/antitrust/cases/dec_docs/37507/37507_193_6.pdf published 19.07.2006

National law: CPA and procedural economy

Key points

• In this national patent case from the District Court The Hague, the patentee submitted that an inventive step attack should fail because the attack started from a document which was (in its view) not the closest prior art. The Court disagrees with this argument. However, the reason they give is interesting.
  
• “An invention must be inventive in view of any document from the relevant state of the art that is a realistic starting point for the average skilled person to come to the invention. The reason for starting from the closest prior art in the assessment is purely a consideration of procedural economy: when an invention is assessed to be inventive with regard to the closest prior art, this generally also applies with regard to prior art documents which are further removed from the invention.”
  
• Cf. Szabo 1986: " Instead of taking an arbitrary starting point for the invention, as a modification of what was already specifically known, it is more reasonable and economic to select the "closest art" for the purpose. [...]  If the invention is, on the other hand, upheld in spite of the existence of the closest art, other less relevant citations need hardly be considered as starting points for such challenge[...]  An opponent may nevertheless always try to launch an attack based on a different document, and if successful, this would become the closest art in the given circumstances."  (G.S.A. Szabo, The problem and solution approach to the inventive step, E.I.P.R. 1986, 8(10), 293-303)

Disctrict Court The Hague 28 May 2020 (Sisvel vs. Oppo)

ECLI:NL:RBDHA:2020:4632

(translation)

Closest prior art

4.25 Sisvel further disputes that [the document] Eriksson can serve as a starting point for the inventive attack because this document cannot be regarded as the closest prior art when using the PSA. 

That defense does not make sense either. An invention must be inventive in view of any document from the relevant state of the art that is a realistic starting point for the average skilled person to come to the invention. The reason for starting from the closest prior art in the assessment is purely a consideration of procedural economy: when an invention is assessed to be inventive with regard to the closest prior art, this generally also applies with regard to prior art documents which are further removed from the invention. 

In addition, in this case Eriksson focuses on error correction mechanisms in wireless transmission using EGPRS, in particular also throughput or data rate. It also raises the question of how to increase the granularity of code rates. This is in the same technical field as the subject of the patent. The court, therefore, considers Eriksson a suitable starting point for the PSA.

(original)

meest nabij stand van de techniek
4.25. Sisvel betwist voorts dat Eriksson als uitgangspunt kan dienen voor de inventiviteitsaanval omdat dit document niet kan worden aangemerkt als dichtstbijzijnde stand van de techniek bij toepassing van de PSA. Ook dat verweer snijdt geen hout. Een uitvinding dient inventief te zijn ten opzichte van ieder document uit de relevante stand van de techniek dat een reëel uitgangspunt voor de gemiddelde vakman is om tot de uitvinding te kunnen komen. De reden om bij de beoordeling uit te gaan van de meest nabije stand van de techniek is zuiver een proceseconomische afweging: wanneer een uitvinding inventief wordt beoordeeld ten aanzien van de meest nabij stand van de techniek, geldt dit in het algemeen eveneens ten aanzien van verder van de uitvinding af liggende anticipaties. Daar komt bij dat in dit geval Eriksson ziet op foutcorrectiemechanismen bij draadloze verzending met gebruikmaking van EGPRS, in het bijzonder mede op de throughput of datasnelheid. Daarbij komt ook de vraag aan de orde hoe de granulariteit van codesnelheden14 verhoogd kan worden. Dit ligt op hetzelfde technische terrein als het onderwerp van het octrooi. De rechtbank acht Eriksson dan ook een geschikt uitgangspunt voor de PSA.

NL - Biogen vs. Celltrion: Transfer of priority

Key points

• By way of exception, today's post is about a recent decision of a national court, namely the Court of Appeal The Hague (Judges Prof. Blok, Prof. Schaafsma and Prof. Van Nispen). The issue is whether the European patent in suit validly claims the priority of a US provisional application; in particular, the question is whether the transfer of priority from the inventors (as applicants of the US provisional) to the companies (the applicants of the PCT application resulting in the European patent) is valid. The Court first determines which law is applicable. Thereby the Court provides very detailed reasoning, starting from first principles, in order to find - rather surprisingly - that the matter is governed by the EPC rather than national law.
  
  The Court starts from the observation that the priority right is a right granted by the lex loci protectionis (and not the law of the country of filing the priority application), because the right of priority is part of the rules (of the country which grants the patent) concerning the grant and validity of patents. The lex loci protectionis is the EPC in this case about the validity of a European patent granted on a PCT patent application.
• The court leaves open whether the issue of transfer of priority is a matter of patent law  or a matter of property law because both give -always- the same result. In the former case, the lex loci protectionis applies. In the latter case, the property law aspects of IP rights are governed by the lex rei sitae (according to Dutch conflict-of-law rules), which is the law of the country where protection is requested (lex loci protectionis), i.e. again the EPC. (As a comment, so far the analysis appears similar the one of the German Patent Office in its fundamental decision on priority of 16 December 1905).
• The Court of Appeal then solves the tricky issues that the EPC does not seem to provide for property law rules for priority rights.
• The Court: "In the opinion of the Court of Appeal, the question of who can invoke the right of priority must be answered on the basis of an autonomous interpretation of the EPC instead of an explanation based on national law." (r.4.20)
•  The Court observes that the priority right can be transferred (conveyed) according to Article 87 EPC. The term "successor in title" in Article 87 indicates the assignee of the priority right, not the assignee of the priority-founding application. Moreover, the "successor in title" is not necessarily the same as the person having the right to the patent in the sense of Article 60 EPC, because the existence of the priority right does not require that the priority application has been filed by a person who is entitled to the patent.
• According to the Court, any formal requirements for a transfer of priority right are determined, autonomously, by the EPC (as lex loci protectionis), because the rules about priority are part of the common rules about the grant and validity of European patents and because disputes about priority may also arise in procedures before the EPO.
• Because the text of the EPC does not provide for any formal requirements for the assignment of the priority right, and taking into account the purpose of the right of priority (to facilitate the international filing of patent applications), the Court concludes that there are no formal requirements for the transfer (assignment) of priority rights under the EPC. In particular, there is no requirement of a written assignment document; this is different from what Article 72 EPC prescribes for the assignment of European patent applications. Nevertheless, the rules of evidence of the Court at issue (lex fori) apply for issues concerning the allowed means of evidence and the evaluation of the evidence.
• Having established this framework, the Court applies it to the facts of the case (r. 4.25 ff.), namely the question of interpretation of the purported assignment document (an employment contract of one of the inventors). The Court distinguishes between the conflict-of-law rules concerning the property law matters and concerning the interpretation of the assignment agreement at issue. The latter is a matter of obligations, such that the applicable law is determined (what is now) the Rome I regulation No. 593/2008. The Court finds that the contract is an effective assignment of the priority right.
• Disclosure: my colleague Martin Klok was involved as a patent attorney for the patentee(s).

Additional comments: see my post of 02.09.2019.


Court of Appeal The Hague 30 July 2019 (Biogen vs. Celltrion).
ECLI:NL:GHDHA:2019:1962 

Note: Edited machine translation; [...] :  anonymization by the Court; <...>: additions and edits by me, PJL. Alternative translation here.

<...> priority

4.4. The dispute over the claim to the right of priority focuses on the question whether Biogen can invoke that right on the basis of the priority application P1 <a US provisional application> although not Biogen, but [name 2] and [name 1] <inventors> have filed the priority application.

4.5. In answering that question, a distinction must be made between (a) the question whether and, if so, under what conditions, a person other than the person who submitted the priority application may invoke the right of priority, and (b) how agreements between Biogen on the one hand and [name 2] and [name 1] on the other must be interpreted. This distinction is important, because among other things,  those subjects are governed by different rules for determining the applicable law (conflict rules) and must therefore be answered in the present case on the basis of the law of different legal systems. After this, the court will determine per question (i) which conflict rule applies and which law applies according to that conflict rule, and (ii) how the relevant question under applicable law must be answered.

Question (a) (i): priority right, conflict law, applicable law

4.6. The debate of the parties is placed in the framework of the question of whether the priority right invoked by  EP 304 <the Europen patent in suit> has been transferred to Biogen. The parties thereby both assume that (via the Massachusetts law as chosen in the agreement between [name 1] and Biogen Idec Inc.) federal US law applies to that property law question. In view of the following, this assumption is incorrect in the opinion of the court of appeal.

4.7. First of all, it must be stated that the right of priority is a right granted by the lex loci protectionis. The conditions for granting and revoking patents for a certain country are, after all, determined in accordance with Article 2 (1) of the Paris Convention (hereafter: PC) [footnote 1] by the law of that country, the lex loci protectionis. The right of priority, which relates to the reference date in the assessment of novelty and inventiveness, is part of the rules of the law of that country regarding granting and revocation of patents.    

4.8. In a case wherein a European patent is granted on the basis of an international application, such as EP 304, the lex loci protectionis is the supranational law of the Patent Cooperation Treaty [footnote 2] and the European Patent Convention (hereinafter: EPC) [footnote 3] , wherein the substantive requirements for patentability are exclusively determined by the EPC (Article 27, paragraph 5, Patent Cooperation Treaty). The EPC sets for the granting of a European patent inter alia a requirement that the subject matter of the patent is new and inventive in relation to the state of the art (articles 52-56 EPC) and stipulates that a European patent granted in violation of that condition is declared invalid (Article 138, first paragraph, under a,  EPC). The priority right governed by Articles 87 to 89 of the EPC forms part of those rules. Article 89 of the EPC stipulates that the right of priority has as effect that the filing date of the priority application is used as - in short - the reference date for the assessment of novelty and inventive step.  

4.9. The right of priority is therefore not, as the parties seem to assume, a right conferred by the legal system of the country where the priority application has been filed. After all, that legal system does not determine the conditions for granting and revoking the patent for which the later application <i.e. the priority-claiming patent application> is submitted, including the reference date for assessing the novelty and inventive step of the subject-matter of the later application.

Unwired v Huawei - Priority date and time zone

Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors
[2015] EWHC 3366 (Pat) (23 November 2015)
Link to decision

Key points

• The allegedly novelty destroying document was published on a server a few hours before the filing of the US priority-founding application. If you take Central European Time (CET), both moments were on the same date. If you take the time zone of Hawaii, the moment the document was published was in the evening and the filing and the next morning, such that the document forms prior art.
• Judge Birss decides that the time zone of the patent office of filing the priority founding application (office of first filing) to decide the dates for prior art under Article 54(2) EPC. Therefore, a document only forms Article 54(2) EPC prior art if it is published before midnight at the start of the filing date of the priority founding application in the time zone of the patent office where that application was filed.
• However, for prior rights under Article 54(3) EPC, you compare the filing dates as accorded to the applications, irrespective of time zones. A European patent application claiming priority of a United States application can form a prior right for a European patent application claiming priority of a Japanese patent application, even if the US patent application was filed an hour later, because at 8 am in Japan is 6 pm in the USA of the date before.

Reasons

1. The prior art relied on is the Ericsson TDoc. This document was uploaded to a publicly accessible server for consideration at an ETSI Working Group Meeting. It is not in dispute that the Ericsson TDoc amounts to an enabling disclosure of the invention, the issue is whether it formed part of the state of the art
   

National decision - Partial priority

Patents Court of 10 July 2013 – HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) (BAILII) 

Key point

• In this UK decision, a question was whether the claims had priority in view of the requirement of "same invention", because the claims were a generalization from the priority document. 
• This decision is also discussed in recent decision T 557/13 referring the questions about partial priority to the Enlarged Board in G1/15:

15.2.2 In HTC Corporation v Gemalto SA and HTC Corporation v Gemalto NV [2013] EWHC 1876 (Pat) of 10 July 2013, concerning European Patent (UK) 0 932 865, the judge noted with reference to G 2/98 (Reasons, 6.7), that "although one can sympathise with the desire for a limited number", it was questionable whether there was "any principled basis for such a requirement". The "need for clearly defined alternative subject-matters" was expressly accepted "if a single claim is to be given partial or multiple priorities" (paragraph 160).
In effect (paragraph 195), claim 1 comprising features defined with respect to a "high level language", was not found to be (even partially) entitled to priority, since "Java" was the only programming language disclosed in the priority document. However, claim 3, dependent on claim 1 and limited by reference to "Java", was found to enjoy priority.

This post has been kept in stock for some time. 

Summary
OJ 2015, Sp. 2. 

Keyword: priority – same invention – multiple priorities

HTC had challenged the priority claimed for Gemalto SA's European patent (UK) 0 932 865 ("Using a High Level Programming Language with a Microcontroller").

National decision - Can anyone start revocation action?

Paris Court of Appeal of 19 March 2014 (10/21042) – Artygraphie v Cartel

Source: EPO OJ 2015 SE2

EPO Summary of the case

Keyword: patentable invention – technical character

The defendant was the proprietor of European patent 1 336 948 for a "public display interactive terminal". A subsequent request for limitation of the French part of the patent was granted by INPI.

The appellant sought the French part's revocation in its entirety for lack of technical character, novelty and inventive step.

The appellant wanted all claims revoked, even though the defendant was only suing it for infringing claims 1 to 5, 7 and 9. Its request in respect of dependent claims 6, 8 and 10 was therefore inadmissible for lack of legal interest.


Note

Article 138(1) EPC does not stipulate who may initiate revocation proceedings. In France, these can apparently only be started by an accused infringer and only as far as the claims are alleged to be infringed. This makes filing opposition before the EPO even more important to consider.

See this post by Isabelle Romet about the restrictions on starting revocation proceedings in France.
As explained in that post, a time limit of 5 years may also apply in France for starting revocation proceedings, possibly even starting from the publication of the application. However, this seems to be the subject of much debate.
An interesting question is, of course, whom the UPCA will allow initiating (central) revocation proceedings.

This post has been kept in stock for some time.

National decisions - Inherent features and implicit disclosure

Federal Court of Justice of 14 August 2012 (X ZR 3/10) – Non-UV-sensitive printing plate
OJ 2015, Suppl. 2, IV

Key point

• In case a priority document discloses an embodiment with an inherent feature, this document anticipates, but does not disclose the subject-matter of a claim specifying that feature.

EPO summary of the decision

According to the Court's established case law, the skilled person has to be able to derive the claimed technical teaching – "directly and unambiguously" – from the original documents as a possible embodiment of the invention. Where an element of the teaching in a citation (here: D1) was characterised by a feature enabling the skilled person to select embodiments suitable for achieving the desired effect (here: lack of photosensitivity to ultraviolet light), but which was not clearly disclosed in the priority document (here: D1.1, D1.2), there is a lack of disclosure in the subsequent application if that property, even though, from an objective point of view, it was also a feature of an embodiment disclosed in the priority document, was at least not readily apparent to the skilled person. As an aside, the Court observed that this reasoning also applied to the ground of revocation of subject-matter extending beyond the content of the application (inadmissible extension: cf. Federal Court of Justice of 17 July 2012 – Polymer foam).

The Court also observed that, to avoid unreasonably restricting applicants in drawing on disclosure, it had allowed generalisations of originally disclosed embodiments. However, such generalisations are not considered admissible where the more general form is characterised by a feature not actually mentioned or not readily apparent to the skilled person. No other test can be applied in the assessment of priority. It is therefore not sufficient by itself that this feature becomes apparent when a disclosed embodiment is reproduced.

This post was kept in stock for some time.